WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Missoni S.p.A v. 仲裁域名/DomainJet, Inc. /Jack Sun
Case No. D2011-1058
1. The Parties
Complainant is Missoni S.p.A of Sumirago, Italy, represented by Dr. Modiano & Associati S.p.A., Italy.
Respondent is 仲裁域名/DomainJet, Inc. /Jack Sun of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <missonifragrance.com> is registered with Xiamen eName Network Technology Corporation Limited dba eName Corp (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2011. On June 22, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 23, 2011, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In a separate email communication later that same day, the Registrar advised the Center that the disputed domain name was in its redemption period and could not be locked. The Center sent an email to the Registrar later on June 23, 2011 noting that the disputed domain name may have expired as of May 14, 2011, requesting that the Registrar lock the disputed domain name in accordance with ICANN’s Expired Domain Deletion Policy, and requesting that the Registrar advise whether specific actions were required by Complainant or Respondent to ensure that the disputed domain name would be locked and would remain locked. The Registrar advised the Center via email on June 24, 2011 that the disputed domain name needed to be restored or renewed by Complainant or Respondent before it could be locked. Later that same day, the Registrar sent a further email to the Center confirming an earlier telephone conversation by advising that a restoration fee of 800 RMB (Chinese Yuan) was required in order to restore the disputed domain name.
On June 24, 2011, the Center contacted the parties via email requesting that they contact the Registrar as soon as possible to restore the disputed domain name. On June 27, 2011, Complainant sent an email to the Registrar confirming that the renewal fees had been paid. On June 28, 2011, the Registrar confirmed by email to Complainant that the disputed domain name was restored and placed on registrar hold.
On June 23, 2011, an email was sent by Respondent to Complainant which indicated that Respondent was willing to settle the matter amicably. Complainant responded by email on June 23, 2011 (the Center was copied on this email communication) noting that the proceedings had commenced and requesting that Respondent send an email acknowledging Complainant’s rights in the disputed domain name and confirming that the disputed domain name would be transferred to Complainant at no cost. Complainant indicated that proceedings could be suspended and eventually terminated if Respondent were to acknowledge Complainant’s rights and agree to transfer the disputed domain name. On June 30, 2011, the Center sent an email communication to Complainant suggesting that the proceedings could be suspended in the interest of resolving the matter amicably. On July 4, 2011, Complainant contacted the Center via email requesting that the proceedings be continued.
On July 4, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, Complainant sent an e-mail to the Center requesting that English be the language of the proceeding. Respondent also sent an email to the Center on the same day stating that he only understands simple English. The Center acknowledged receipt of emails received from the both parties. In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 11, 2011. In this communication, the Center acknowledged Complainant’s request that English be the language of the proceeding and Respondent’s indication of his understanding of simple English only and request of a Chinese translation of Complainant’s email regarding the language of the proceeding. The Center acknowledged that the language of the Registration Agreement was Chinese and confirmed its decision to (1) accept the Complaint as filed in English; (2) accept a Response in either English or Chinese; and (3) appoint a Panel familiar with both English and Chinese.
In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2011. On August 1, 2011, the Center confirmed that it did not receive any formal Response from Respondent by the specified Response due date.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on August 4, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is an Italian fashion company and takes its Missoni name and trademark from its designer, Mr. Ottavio Missoni. Complainant maintains a website at “www.missoni.com” which promotes its clothing lines and fragrances and has provided evidence of registrations for its MISSONI trademark in multiple jurisdictions including Italy, China, United States of America, the European Community, Singapore, Republic of Korea, Russian Federation, and Switzerland.
The disputed domain name was created on May 14, 2010. Based on the record, Respondent Jack Sun appears to be an individual residing in China, while DomainJet Inc. is a company which appears to be associated with address in the United States. The record shows that Respondent has been named in prior UDRP proceedings filed by other parties as complainants.
5. Parties’ Contentions
Complainant claims that the disputed domain name <missonifragrance.com> is confusingly similar to its MISSONI trademark in that it only adds the generic term “fragrance” and the Top Level Domain “.com” to its MISSONI trademark. Complainant notes that the term “fragrance” is indicative of a product offered by Complainant under its MISSONI mark, and claims that the use of this term in the disputed domain name only increases the likelihood that consumers would confuse the disputed domain name for a domain name authorized by or linked to Complainant. Additionally, Complainant asserts that no agreement has been made authorizing or licensing Respondent to use its trademark and notes that Respondent appears to have no legitimate interest in “Missoni” to justify the disputed domain name’s registration. Complainant further notes that the content of the disputed domain name consists only sponsored links to third party websites and maintains that there is no evidence that Respondent has used the disputed domain name for any legitimate purposes.
Complainant alleges that Respondent could not have registered the disputed domain name in good faith because it incorporates Complainant’s MISSONI trademark in its entirety. Additionally, Complainant has cited prior cases involving its MISSONI trademark where UDRP panels recognized its trademark as one which has a worldwide reputation and is well-known. Moreover, Complainant has cited multiple UDRP cases involving Respondent’s registration of domain names incorporating third party trademarks in support of a claim that Respondent has established a pattern of bad faith conduct. Finally, Complainant alleges that the disputed domain name is being used in bad faith because its content is made up exclusively of sponsored links and maintains that Respondent has attempted to sell other domain names incorporating its MISSONI trademark for profit.
Complainant has requested that the disputed domain name be transferred from Respondent to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Language of the Proceeding
The Panel has reviewed the communications received from Complainant and Respondent regarding the language of the proceeding. Complainant has requested that English be the language of the proceeding because (1) Respondent appears to be located in both the United States and China; (2) Respondent has been involved in prior UDRP cases conducted in the English language; and (3) Respondent has exhibited a familiarity with the English language in email communications exchanged with Complainant. Respondent has requested a translation of Complainant’s email regarding the language of the proceeding.
The Panel acknowledges that Respondent has been involved in at least five (5) UDRP proceedings which were conducted in the English language. Additionally, the record shows that Respondent has knowledge of the English language. Specifically, Respondent has communicated with Complainant in English, and the record shows that the disputed domain name displayed content in the English language. Moreover, the record shows that Respondent has registered other domain names incorporating third party trademarks, and that some of these domain names list contact addresses in the United States. Based on the foregoing, the Panel agrees that English should be the language of the administrative proceeding in this case.
A. Identical or Confusingly Similar
Complainant has established trademark rights in MISSONI which date to 1969 in Italy, 1975 in the United States, and 1990 in China. It is clear from the record that Complainant sells fragrances under its MISSONI trademark.
The disputed domain name <missonifragrance.com> is confusingly similar to the MISSONI trademark in which Complainant has rights. It combines Complainant’s MISSONI trademark and the term “fragrance”. The use of “fragrance” with Complainant’s MISSONI trademark as featured in the disputed domain name <missonifragrance.com> has a descriptive function given that fragrances are provided under Complainant’s MISSONI trademark. Prior UDRP cases have held that the addition of a descriptive term to a distinctive trademark such as MISSONI does not create a domain name which is distinguishable from the trademark. See, e.g., Diageo Brands B.V., Diageo North America, Inc. and United Distillers Manufacturing, Inc. v. iVodka.com a.k.a. Alec Bargman, WIPO Case No. D2004-0627 (holding that domain names including <gilbeys-vodka.com>, <gordonsvodka.com> and <popov-vodka.com> were confusingly similar to the GILBEYS, GORDONS and POPOV trademarks in which complainant had established rights because the word “vodka” is descriptive of the goods offered by complainant under these marks) and Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219 (holding that the addition of “-games” to the domain name <pokemon-games.com> did nothing to reduce confusing similarity with the POKEMON trademark). Based on the descriptive characteristics of the term “fragrance” when combined with Complainant’s established MISSONI trademark, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
As noted above, Complainant has provided evidence of its prior rights in the MISSONI trademark. These rights precede the creation of the disputed domain name by decades.
The disputed domain name <missonifragrance.com> incorporates Complainant’s trademark in its entirety. There is no evidence indicating that Respondent is licensed to use Complainant’s MISSONI trademark, that Respondent is associated or affiliated with Complainant, or that Respondent has any other rights or legitimate interests in the term “Missoni” or the letter string “missonifragrance”. As such, Complainant has made out its prima facie case, which the Respondent has not rebutted.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the distinctiveness of Complainant’s MISSONI trademark and the established notoriety of the trademark, it is difficult to believe that Respondent was unaware of Complainant’s business when registering a domain name which incorporates Complainant’s trademark in its entirety. Any doubt in favor of Respondent is further minimized when considering Respondents use of the term “fragrance” in the disputed domain name, a term descriptive of goods provided by Complainant under its established MISSONI trademark.
Complainant’s trademark has been acknowledged by prior UDRP panels as well-known. See, e.g., Missoni S.p.A. v. Liu Zhixian, WIPO Case No. D2010-0371 (citing Complainant’s MISSONI trademark as “distinctive” and “well known around the world”). Registration of a domain name incorporating a well-known trademark can constitute registration in bad faith because it is unlikely that the registrant was unaware of the trademark at the time the domain name was registered. See, e.g., Dr. Ing. H.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Decision No. D2004-0488 (finding bad faith, noting that it was implausible that respondent was unaware of complainant’s trademark PORSCHE when registering <porsche-me.com>). The composition of the disputed domain name establishes that Respondent was aware of Complainant when the disputed domain name was registered because it (1) incorporates Complainant’s MISSONI mark in its entirety; and (2) combines Complainant’s MISSONI trademark with “fragrance”, a term which describes goods sold by Complainant under its MISSONI trademark.
Respondent has been involved in multiple proceedings involving the registration of domain names incorporating third party trademarks such as <morganstanleyaustralia.com>, <crownplaza.co.in>, <lazard.in>, <marimekkobags.com> and <nutriciamedical.com>. Bad faith use and registration by Respondent was found by all UDRP panels. Such history is indicative of a pattern of registering domain names which infringe other parties’ trademarks and as such is indicative of bad faith. Prior UDRP cases have held that similar patterns of bad faith use and registration support a finding of bad faith in a similar case involving a third party’s trademark. See, e.g., Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556 (citing Respondent’s history in UDRP proceedings and registration and use of domain names incorporating the VOLVO trademark as evidence of bad faith) and Microsoft Corporation v. Party Night, Inc. d/b/a Peter Carrington, WIPO Case No. D2003-0501 (noting that the “many arbitral and judicial decisions rendered against (Respondent) is evidence of a behavior which is the misuse of famous marks for illegitimate purposes” in a finding of bad faith registration and use).
The webpage submitted with the Complaint features links to third party websites which was at one time featured at <missonifragrance.com>. These included links titled “Profumi Selettivi-Nicchia”, “Antonioli Online Shop” and “Discount DKNY” which were accompanied by language advertising perfume, designer clothing, and designer fashion, respectively. It is clear that such links advertised third party products which compete with those sold under Complainant’s MISSONI trademark. Use of a website incorporating another party’s trademark to display third party links to goods which compete with those sold under the trademark at issue demonstrates a deliberate effort to trade off the goodwill associated with the trademark. Lancôme Parfums et Beaute & Compagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited, WIPO Case No. D2009-0728. Respondent’s use of the disputed domain name is diverting traffic from Complainant’s websites. This is bad faith use and such conduct falls within the scope of paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that there is evidence of bad faith use and registration. The requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <missonifragrance.com> be transferred to Complainant.
Kimberley Chen Nobles
Dated: August 18, 2011